Copyright - Married Woman - Agreement with Publisher - Implied Contract - Suit to Restrain Publication of Second Edition by Licensee.
An authoress, who was a married woman, entered into a verbal agreement with a publisher that he should publish a work at his own expense, and pay her a royalty on the copies sold. The work was accordingly published, but, before all the copies were sold, the authoress arranged with another publisher to bring out a second edition of the same work: -
Held, that no agreement could be implied on the part of the authoress not to bring out another edition until all of the first edition was sold and that a suit against the authoress and her husband and the second publisher to restrain such publication could not be sustained.
Semble, a married woman, entitled to the copyright of a work for her separate use, might enter into such a contract with a publisher for its publication as to bind herself during a definite period not to grant a license to publish the work to any other person, and such a contract would be enforceable against a licensee with notice.
The Plaintiffs in this case were Messrs. Warne, who were publishers, and who claimed under an alleged agreement with an authoress, Mrs. Cook, who was a married woman, to have the exclusive right of publishing the first edition of one of her works, and sought to restrain Messrs. Routledge from publishing the work until the first edition was sold off.
In April, 1873, Mrs. Cook had an interview with the Plaintiffs in reference to the manuscript of a work which she had written, called "How to Dress on 15 pounds a Year as a Lady", when it was verbally agreed that the Plaintiffs should publish the said work anonymously, bearing all expenses directly or indirectly connected therewith, and that each copy should be published at 1s., and that the Plaintiffs should pay to Mrs. Cook, as the authoress, a royalty 1d. for each copy sold, reckoning for this purpose thirteen copies as twelve.
The Plaintiffs accordingly advertised the book under the title of "How to Dress on 15 pounds a Year as a Lady, by a Lady", and, as they alleged, they expended large sums in advertising it. In July, 1873, a considerable sale had been obtained for the work, and 100 pounds was paid by the Plaintiffs to Mrs. Cook as her royalty on the copies sold.
Differences having arisen between Mrs. Cook and the Plaintiffs, in November, 1873, Mrs. Cook and her husband agreed with Messrs. Routledge that they should publish a revised edition of the book, which they accordingly advertised under the same title, while about 2,000 copies of the first edition published by the Plaintiffs remained unsold.
The Plaintiffs then filed their bill against Messrs. Routledge and Mrs. Cook and her husband as Defendants, praying a declaration that the Defendant Mrs. Cook was, under the said agreement with the Plaintiffs, entitled to the copyright of and all beneficial interest in the said book for her separate use, and that, being so entitled, she, by virtue of the same agreement or otherwise, entered into an implied or some other contract with the Plaintiffs that no revised, or altered, or other edition, and no reprint of the original edition of the same book should be published (except through or with the consent of the Plaintiffs) until the Plaintiffs should have sold all the copies of the same book, and that Mrs. Cook's separate property in the same book or in the copyright thereof was bound by such implied contract; and also praying that Messrs. Routledge might be restrained from advertising, publishing, or selling any revised, or altered, or other edition of the said book until all such copies should have been sold.
Mr. E. Beaumont (Mr. Fry, Q.C., with him), for the Plaintiffs:-
Under the verbal agreement between the Plaintiffs and Mrs. Cook, and exclusive right was conferred upon the Plaintiffs to publish the work during the pleasure of the authoress: Reade v. Bentley (1). We do not dispute her right to determine the joint adventure at any moment, but we submit that, having determined it, she is not at liberty to allow another publisher to issue a second edition, so long as any copies of the original edition remain unsold on our hands. Our right to sell the remaining stock is not, and could not be, disputed, after the decision in Howitt v. Hall (2), but we claim not only that right, but also the right to insist that the value of the remaining stock, which we printed in performance of our part of the agreement, shall not be destroyed by the issue of another edition. A right similar to that which we contend for was recognised in Sweet v. Cater (3) and Stevens v. Benning (4); we therefore ask the Court to imply a contract on the part of the authoress not to publish another edition until all the copies of our edition shall have been sold, and to enforce that contract against Messrs. Routledge, who had notice of our rights.
Mr. D. Jones, for Messrs. Routledge, and Mr. Shortt and Mr. F. J. D. Bell, for Mr. and Mrs. Cook were not called on.
SIR G. JESSEL M.R.:-
This is a bill filed by some publishers against some other publishers and Mrs. Cook and her husband, and it in effect seeks to restrain the lady from publishing or allowing others to publish a work the copyright in which is undoubtedly invested in her. Now, if there is anything to prevent her exercising her rights, it must be found either in the bill or in the evidence, and I cannot find it anywhere. There is not, as far as I can see, a pretence for saying that she ever contracted not to publish the book, which is what I am asked to prevent her from doing.
This is a bill for an injunction in respect of a contract as to which there can be no specific performance. Whatever the contract may be, it is not contended that it is one that this Court will specifically perform. Therefore, it comes amongst that class of cases of which Lumley v. Wagner (5) is a remarkable example, in which the Court will restrain a person from doing an act, although it cannot compel the person so restrained to specifically perform the contract, whatever it be. That hardly applies here in the same manner, because the person sought to be restrained is not, nor are those claiming under title from her, required to do anything more, and therefore many of the objections which have been raised as to the interference by the Court in that class of cases do not apply here; but still it must not be forgotten, as was said by Lord St. Leonards in Lumley v. Wagner (5), that it is not a jurisdiction to be extended.
The jurisdiction, if founded at all, must be founded upon contract, and upon clear contract, because the Court will not interfere by injunction, unless a clear contract is shown. Therefore, it is incumbent upon the Plaintiffs to show a clear contract by someone not to publish this new edition of the work in question. Here, however, the contract, or whatever it was, was entered into with a married woman, who was entitled to this copyright for her separate use; and, as as I understand the mere power of contracting which a married woman has in respect of such property, is not a power of entering into a personal contract in the same sense of binding her personally, but a power of contracting so as to bind her property; in other words, you can enforce that contract as against the persons who, for the time being, hold that property, so far as it is a contract affecting the property. Therefore I take it that it is not impossible that a married woman may so deal with copyright to which she is entitled for her separate use as to prevent the assigns of that contract from breaking her contract. In other words, I think it is quite possible that a married woman may put a kind of fetter upon the right to publish, that is, that she may so far validly bind the copyright, which is a right to publish, that no person claiming under her by way of assignment or license with notice would be allowed to publish.
To illustrate what I mean, take a simple instance. Suppose a married woman having a copyright settled to her parents' use, agreed to give an exclusive right to the publisher to publish an edition of 10,000 copies of a book, and at the same time agreed that in consideration of his agreeing to publish it at a given price per copy, and to pay her a sum of money, she would not grant a license to any other person for a definite period to publish that book, and would not allow it to be published either by herself or anybody else - that sort of contract would, I think, be enforceable against any one who took either an assignment or sale of the copyright with notice. If it were otherwise, instead of a married woman having the power of dealing with her property in the same way as a man, she would not have the power of entering into the same beneficial arrangement as a man can enter into.
But the real question that I have to decide comes long before we reach that point. The question is, what is the contract? [His Honour then stated the facts of the case.]
It is not denied that the conversation between Mrs. Cook and Mr. Warne did not create a contract for any definite period. The Plaintiffs' counsel argued that it was a contract revocable by either party at pleasure, or a kind of joint adventure determinable at will. What was it for? The publishers were to publish this book, and were to pay a royalty of 1d. for every copy they sold. A very simple contract. What did it imply? Is it an exclusive license? It is agreed that it is not an assignment of the copyright. I think it might be considered a license, although that is by no means an easy thing to decide. Neither party said a word about it's being a license, and of course nothing is better settled in a claim of copyright than that a license of this kind would not be an assignment of the copyright. But then, looking at the nature of the book, and to the circumstances that it was a term of the agreement that the publishers should publish at their own risk and pay the royalty, I think the contract, so long as it existed, must be taken to be an exclusive contract, that is to say, that so long as Messrs. Warne & Co. were allowed to publish so long no one else could publish, neither the lady herself or an assign from her.
That being established, what is the next right it gives to either party? On the determination of the partnership adventure, or whatever you choose to call it, what right had Messrs. Warne & Co. in the book? There is authority upon the subject, but I do not think it wants authority. I think it is plain that no termination of the agreement could deprive them of the right of selling the copies which they have themselves printed under this arrangement. Whether the arrangement was at will or for a term, the publishers must retain the right of selling for their own benefit (subject to the royalty) the copies which they have printed at their own expense in reliance upon that agreement. So far I go with the Plaintiffs, but the Plaintiffs then want me to import something else, not only that the publishers should have a right to sell any copies they might have printed before the disagreement, but that the owner of the copyright should not have the right to publish at all so long as any copies remain unsold. I cannot find that in the agreement, and it does not seem to be reasonable to import it; because it would come to this, that if the publisher printed a very large number of copies it would deprive the authoress of the copyright altogether. I cannot import such an unreasonable term into the agreement.
Then it is said, that if you give the publisher no protection the result may be that the author may publish another edition a day or two after the publishing of the first edition, and so destroy the value of the remaining copies of the first edition remaining unsold. That may be. And it is said that that is so unreasonable that you must infer some stipulation to prevent it. Why? No doubt partnerships at will have their inconveniences as well as their conveniences. There is no reason why I should make persons take up a totally different position form that which they have agreed to take up because it might be convenient to one of the parties after the termination of the arrangement. If you do want that protection for a term of years, or for a definite term, you must contract for it. That is all. But I cannot import such a term into the contract. If I did I should make partnerships at will involve consequences that the partners never dreamt of.
Suppose two people took a shop together in London, one finding the capital and the other the skill and power of management, and suppose the one finding the capital took a lease of the shop, and expended a large sum of money in furniture, fixtures, stock-in-trade, and goods, and suppose, a week afterwards, the other one determined the partnership. No doubt, that might occasion a very great loss to the capitalist, but could I import an agreement that the other man should not carry on any business elsewhere until a sufficient time had been given to enable the first man to get remuneration for the expenditure in buying stock, and leasing the shop, and so forth, for that is what I am asked to do in this case? The answer is, no; if you wanted to engage the services of a skilled man for a term of years, you should have made your partnership for a term of years, and then you could not have got rid of him at your will and pleasure, but you have got the advantage of determining the arrangement at your will and pleasure, and you object to his determining it when he likes. In fact, I am asked to make an agreement for the parties, and an agreement which I am satisfied was never contemplated on the part of the lady, and I very much doubt whether it was ever contemplated by the publishers.
I believe the publishers relied, not upon any legal bargain at all, but upon this: they had great experience with authors, and they had found that, as a rule, when arrangements of this kind were made, they were not broken without sufficient reason; and I cannot help seeing that, in this case, if something had not occurred, which it is not for me to say was or was not a sufficient reason, but which the lady thought a sufficient reason, this bargain or arrangement would have gone on, and would not have been terminated, and that, in my opinion, is what the publishers relied on, and that is what the lady relied on. This bargain has been put an end to, and I cannot make a new bargain for the parties; and I say it is not only not necessary to infer any such term as the Plaintiffs insist upon, but I think the introduction of such a term would be irrational; and as there is no such term in the contract, and I decline to infer one, the result is that there is no breach of contract of which the Plaintiffs can complain, and consequently this bill must be dismissed with costs.
Solicitors for the Plaintiffs; Messrs. Beaumont & Son.
Solicitors for the Defendants; Mr. A.R. Hordern; Messrs. Allen & Son.
Cases referred to:
(1) 3 K. & J. 271; 4 K. & J. 656.
(2) 10 W. R. 381.
(3) 11 Sim. 572.
(4) 1 K. & J. 168.
(5) 1 D. M. & G. 604.
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